The Delhi High Court, in a landmark judgment, declared ‘BOROLINE’ as a well-known trademark, granting G.D. Pharmaceuticals Private Limited a significant victory in its legal battle against M/s Cento Products (India). The case, registered under CS(COMM) 53/2019, was presided over by Justice Mini Pushkarna, who issued a permanent injunction against the defendant for trademark infringement and passing off.
Background of the Case
G.D. Pharmaceuticals Private Limited, a company with a legacy dating back to 1929, filed a lawsuit against M/s Cento Products (India) for using a deceptively similar trademark, ‘BOROBEAUTY,’ for their antiseptic creams. The plaintiff, represented by advocates Mr. Afzal B. Khan and Mr. Sharad Besoya, contended that the defendant’s product not only copied the name but also imitated the distinctive dark green packaging and trade dress of their flagship product, ‘BOROLINE.’
The plaintiff’s ‘BOROLINE’ has been a household name in India for nearly a century, known for its distinctive green packaging and block capital white font. The plaintiff argued that such imitation by the defendant was an attempt to ride on the goodwill and reputation built by ‘BOROLINE’ over decades.
Legal Issues Involved
The case primarily revolved around issues of trademark infringement, passing off, and whether ‘BOROLINE’ could be considered a well-known trademark under Section 2(1)(zg) and Section 11(2) of the Trade Marks Act, 1999.
1. Trademark Infringement: The plaintiff argued that the use of ‘BOROBEAUTY’ by the defendant was deceptively similar to ‘BOROLINE,’ causing confusion among consumers and diluting the distinctive character of their registered trademark.
2. Passing Off: The plaintiff contended that the defendant’s use of similar packaging and trade dress amounted to passing off, as it misled consumers into believing that ‘BOROBEAUTY’ was associated with or endorsed by ‘BOROLINE.’
3. Well-Known Trademark Status: The plaintiff sought a declaration of ‘BOROLINE’ as a well-known trademark, arguing that it had achieved widespread recognition and a strong reputation among the public, both in India and internationally.
Court’s Observations and Decision
In her judgment, Justice Mini Pushkarna emphasized the importance of protecting well-known trademarks from infringement and passing off. Citing precedents, the court highlighted that a well-known trademark enjoys protection not only in the countries where it is registered but also in other jurisdictions where it has gained recognition.
The court noted that ‘BOROLINE’ had been in continuous and extensive use since 1929 and had acquired significant goodwill and reputation. The plaintiff provided evidence of the trademark’s registration in various countries, including Oman, Turkey, UAE, and Bangladesh, and its recognition as a “Consumer Super Brand” and “Master Brand” in India.
In her ruling, Justice Pushkarna declared:
“There is no denying the fact that ‘BOROLINE’ has attained the status of a household name and is one of the oldest trademarks in continuous use, preceding the independence of India.”
Consequently, the court issued a permanent injunction against the defendant, restraining them from manufacturing, selling, or advertising any product under the name ‘BOROBEAUTY’ or any other name that is deceptively similar to ‘BOROLINE.’ Additionally, the defendant was directed to change its trade dress to something entirely distinct and different from that of ‘BOROLINE’ and was prohibited from using the prefix ‘BORO.’
The court also awarded costs of ₹2,00,000 to the plaintiff, to be paid by the defendant within eight weeks.
Case Details:
– Case Number: CS(COMM) 53/2019
– Plaintiff: G.D. Pharmaceuticals Private Limited
– Defendant: M/s Cento Products (India)
– Bench: Justice Mini Pushkarna
– Plaintiff’s Counsel: Mr. Afzal B. Khan, Mr. Sharad Besoya
– Defendant’s Counsel: Ms. Shreya Malik, Mr. Rahul Kumar
